Case: 22-1349 Document: 37 Page: 1 Filed: 03/13/2023
United States Court of Appeals
for the Federal Circuit
______________________
ALTERWAN, INC.,
Plaintiff-Appellant
v.
AMAZON.COM, INC., AMAZON WEB SERVICES,
INC.,
Defendants-Appellees
______________________
2022-1349
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:19-cv-01544-MN, Judge
Maryellen Noreika.
______________________
Decided: March 13, 2023
______________________
C. GRAHAM GERST, Global IP Law Group, LLC, Chicago, IL, argued for plaintiff-appellant. Also represented
by STEVEN J. FALETTO, ALISON AUBREY RICHARDS, HANNAH L. SADLER.
J. DAVID HADDEN, Fenwick & West LLP, Mountain
View, CA, argued for defendants-appellees. Also represented by JOHNSON KUNCHERIA, RAVI RAGAVENDRA RANGANATH, SAINA S. SHAMILOV; TODD RICHARD GREGORIAN, San
Francisco, CA.
______________________
Case: 22-1349 Document: 37 Page: 2 Filed: 03/13/2023
2 ALTERWAN, INC. v. AMAZON.COM, INC.
Before LOURIE, DYK, and STOLL, Circuit Judges.
DYK, Circuit Judge.
In this patent infringement action, the parties entered
into a stipulation of non-infringement based on two of the
district court’s claim construction rulings. Because the
stipulation is ambiguous and therefore defective, we vacate
and remand for further proceedings.
BACKGROUND
Appellant AlterWAN sued appellee Amazon for infringement of claims of two patents: U.S. Patent Nos.
8,595,478 (“the ʼ478 patent”) and 9,015,471 (“the ʼ471 patent”). 1 AlterWAN’s patents concern improvements to implementing wide area networks (“WANs”) over the
Internet. Both patents share a common specification. The
specification describes two core problems with using the Internet for WANs. The first is the problem of latency (or
delay) due to uncontrolled “hops” from one node to another
while the data packet is en route to its destination. ’478
patent, col. 3 ll. 32–49. The second is the lack of security
for data transmitted over the Internet. ’478 patent, col. 3
ll. 50–53. The patents purport to address those problems
with a “private tunnel” that provides “preplanned high
bandwidth, low hop-count routing paths between pairs of
customer sites.” ’478 patent, col. 4 ll. 17–18, 34.
At the claim construction phase, the parties disputed
two terms relevant to this appeal: “non-blocking bandwidth” and “cooperating service provider.”
1 There were originally six patents involved in the
proceedings below, but only two are relevant to this appeal.
AlterWAN voluntarily stipulated to dismissal of claims
based on the other four patents with prejudice.
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ALTERWAN, INC. v. AMAZON.COM, INC. 3
I. Non-Blocking Bandwidth
The term “non-blocking bandwidth” appears in claims
1, 13, and 14 of the ʼ471 patent but not in the asserted
claims of the ʼ478 patent. Claim 1 of the ʼ471 patent, which
appears to be representative of the ʼ471 claims, uses the
term “non-blocking bandwidth:”
1. An apparatus, comprising:
an interface to receive packets;
circuitry to identify those packets of the received packets corresponding to a set of one
or more predetermined addresses, to identify a set of one or more transmission paths
associated with the set of one or more predetermined addresses, and to select a specific transmission path from the set of one
or more transmission paths; and
an interface to transmit the packets corresponding to the set of one or more predetermined addresses using the specific
transmission path;
wherein
each transmission path of the set of
one or more transmission paths is
associated with a reserved, non-blocking bandwidth, and
the circuitry is to select the specific
transmission path to be a transmission path from the from the [sic] set
of one or more transmission paths
that corresponds to a minimum
link cost relative to each other
transmission path in the set of one
or more transmission paths.
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4 ALTERWAN, INC. v. AMAZON.COM, INC.
ʼ471 patent, col. 15 ll. 44–63 (emphasis added). The specification explains that “the quality of service problem that
has plagued prior attempts is solved by providing non-blocking bandwidth (bandwidth that will always be available and will always be sufficient).” ʼ471 patent, col. 4 l. 66–
col. 5 l. 2.
Amazon sought the construction “bandwidth that will
always be available and will always be sufficient,” J.A. 430,
mirroring the language of the specification. AlterWAN argued that no construction was necessary for “non-blocking
bandwidth.” Alternately, AlterWAN proposed the construction “bandwidth that will always be available and will
always be sufficient while the network is operational.” Id.
AlterWAN urged that the language “while the network is
operational” was necessary because “[t]here is no such
thing as a network that can never fail.” Id. at 431. The
district court agreed with Amazon, reasoning that the patentee acted as its own lexicographer and that the claim
language required that the bandwidth be available even if
the Internet is down.
II. Cooperating Service Provider
The term “cooperating service provider” appears in
claims 1, 6, 10, 18, 42, 51, and 63 of the ʼ478 patent and in
claim 19 of the ʼ471 patent. Claim 1 of the ʼ478 patent appears to be representative:
1. A method of operation in a router that is part of
a wide area network, the method comprising:
filtering inbound data packets received on
an input port of the router to identify data
packets that correspond to a selected group
of addresses relative to data packets that
are not within the selected group of addresses; and
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ALTERWAN, INC. v. AMAZON.COM, INC. 5
providing priority routing for the data
packets in the selected group of addresses,
including
performing a look-up into a routing table
applicable to the selected group of addresses to identify one or more transmission paths that meet a minimum
transmission requirement relative to other
available transmission paths, and
routing the data packets to at least one cooperating service provider using one of the
identified one or more transmission paths.
ʼ478 patent, col. 15 ll. 43–58 (emphasis added).
AlterWAN argued that no construction was necessary
for “cooperating service provider,” or, if construction is necessary, that the term ought to be construed as a “service
provider whose transmission equipment is coupled to the
path” or “third party service provider whose transmission
equipment is coupled to the path.” J.A. 436. Amazon urged
that the term should be construed to mean “service provider that agrees to provide nonblocking bandwidth.” Id.
After a Markman hearing, the district court initially
construed “cooperating service provider” as “service provider that agrees to provide blocked bandwidth.” 2 J.A. 40.
The district court reasoned that the prosecution history, in
which the patentee stated that “cooperating services providers . . . have prearranged for blocked bandwidth[,]” supported this construction. Id. The district court refused to
2 Claim 2 of the ʼ471 patent includes the related
term “cooperating third party service provider.” In its
claim construction order, the district court assigned the
same construction to both “cooperating service provider”
and “cooperating third party service provider.”
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6 ALTERWAN, INC. v. AMAZON.COM, INC.
substitute “non-blocking bandwidth” for “blocked bandwidth,” as Amazon requested, because “the parties disagree[d] whether ‘blocked bandwidth’ has the same meaning
as ‘non-blocking bandwidth,’” but the parties did not ask
the court to construe “blocked bandwidth.” Id. The court
noted that “[s]hould a dispute based on the meaning of
‘blocked bandwidth’ later arise, the parties may raise it to
the extent necessary.” Id.
At the summary judgment stage, AlterWAN argued
that “blocked bandwidth” should be construed as “bandwidth reserved for a particular purpose,” while Amazon
sought to substitute the term “non-blocking bandwidth” for
“blocked bandwidth.” J.A. 771. At a hearing, the district
court agreed with Amazon and changed its construction of
“cooperating service provider” to be a “service provider that
agrees to provide non-blocking bandwidth.” Id. at 3.
III. Further Proceedings
The stipulated judgment that is appealed here was entered into after the filing of motions for summary judgment, including Amazon’s motion for summary judgment
of non-infringement. 3 After changing the construction of
3 The stipulation provided, in relevant part:
[T]he parties stipulate and agree as follows:
1. Under the Court’s constructions of “cooperating service provider” and “nonblocking
bandwidth,” Amazon has not infringed,
and does not infringe, the ’478 and ’471 patents.
2. The parties stipulate to the entry of judgment of non-infringement of the ’478 and
’471 patents, subject to AlterWAN’s
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“cooperating service provider” at the summary judgment
hearing, the district court gave AlterWAN the opportunity
to submit a supplemental expert report to make additional
infringement contentions based on the new construction,
or, if the new construction meant there was no reasonable
infringement argument that AlterWAN could make, to
stipulate to non-infringement.
After the summary judgment hearing, the parties filed
a stipulation and order of non-infringement of the patentsin-suit. The parties stipulated to “the entry of judgment of
non-infringement of the ʼ478 and ʼ471 patents.” J.A. 4.
The stipulation explained, “[u]nder the Court’s constructions of ‘cooperating service provider’ and ‘non-blocking
bandwidth,’ Amazon has not infringed, and does not infringe, the ’478 and ’471 patents.” Id. Based on the stipulation, the district court entered a final judgment.
AlterWAN appealed.
In its appeal, AlterWAN challenges the district court’s
construction of “cooperating service provider” and “non-blocking bandwidth” as well as a third term, “routing.” AlterWAN concedes that “routing,” a term that the district
court offered guidance on at the summary judgment hearing, is not included in the stipulation, but AlterWAN argues we should address the term to conserve judicial
resources. We have jurisdiction under 28 U.S.C.
§ 1295(a)(1).
forthcoming appeal of the Court’s Claim
Construction and Summary Judgment Orders.
J.A. 4.
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8 ALTERWAN, INC. v. AMAZON.COM, INC.
DISCUSSION
I
In past cases, we have held that stipulated judgments
are defective if they are ambiguous in material respects.
See Jang v. Bos. Sci. Corp., 532 F.3d 1330, 1335–36 (Fed.
Cir. 2008). The stipulated judgment here provides that
Amazon does not infringe under the district court’s constructions of “cooperating service provider” and “non-blocking bandwidth.” Under the circumstances of this case, the
stipulation does not provide sufficient detail to allow us to
resolve the claim construction issues presented on appeal.
First, the stipulation does not identify which claims of
the ’471 patent remain at issue in this appeal. We have
vacated judgments that fail to identify which claims are
implicated by the judgment. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1342 (Fed. Cir. 2002) (vacating a judgment in part “[b]ecause the district court did
not . . . identify the specific claims it held to be infringed
under the doctrine of equivalents.”).
More importantly, it is unclear whether the judgment
requires the affirmance of both “cooperating service provider” and “non-blocking bandwidth,” where the interpretation of cooperating service provider includes the term
“non-blocking bandwidth.” 4 It is also unclear whether affirmance requires the approval of all aspects of the construction of “cooperating service provider.”
Stated differently, the parties dispute two aspects of
the construction of the term “cooperating service provider”
– (1) the construction of the incorporated term “non-blocking bandwidth,” and (2) the meaning of the term
4 It would appear that approval of both terms would
be needed since some claims use one term and some use the
other.
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ALTERWAN, INC. v. AMAZON.COM, INC. 9
“cooperating service provider” apart from the incorporated
term. It is unclear whether, under the stipulation, Amazon
prevails on infringement if either construction is correct or
only if both are correct.
At oral argument, it became apparent that the parties
have significant disagreements as to the effect of the stipulation—disagreements that render it impossible for this
court to review the judgment.
AlterWAN asserts that the judgment of non-infringement rests solely on the district court’s construction of
“non-blocking bandwidth,” a term which appears both independently and in the district court’s construction of “cooperating service provider.” AlterWAN argues that the
district court’s construction requires bandwidth to be available to the customer at all times, even when the Internet is
inoperable. Because no system can provide such a service,
Amazon cannot infringe. At oral argument, AlterWAN
took the position that the “sole reason” Amazon does not
infringe under the claim constructions at issue is because
of the exclusion of the caveat they had sought at claim construction (“while the network is operational”). This is so
because “if the internet goes down, it doesn’t provide service.” Oral Arg. at 0:30–1:14; see also Oral Arg. at 31:02–
19 (“Q: Let’s adopt your construction of non-blocking bandwidth, which doesn’t have that limitation, it only requires
that . . . available when the internet is operable, okay? Is
your view that they infringe under that claim construction?
A: Yes, Your Honor.”). In AlterWAN’s view, the core issue
on appeal is whether the district court erred by failing to
add the qualifier “while the network is operational” to its
construction of “non-blocking bandwidth.”
Amazon, on the other hand, contends that the judgment of non-infringement (as to the claims incorporating
the term “cooperating service provider”) should be affirmed
if the construction of “cooperating service provider” is affirmed, quite apart from the issue of internet availability.
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10 ALTERWAN, INC. v. AMAZON.COM, INC.
As explained at oral argument, Amazon contends that it
allows customers to pay for different port speeds, meaning
that the customer gets the purchased speed, not “all the
bandwidth [they] could want.” Oral Arg. at 20:45–21:01.
Since Amazon does not ensure that bandwidth is always
sufficient to meet the customer’s needs, Amazon does not
infringe. Although Amazon defends the district court’s construction of “non-blocking bandwidth” and its rejection of
the qualifier “while the network is operational,” Amazon
contends that any error in this respect would not affect the
judgment of non-infringement. See Oral Arg. at 15:02–22
(“Q: What is the basis [of infringement]? . . . A: Amazon’s
product does not provide sufficient bandwidth to meet everybody’s need, whether the internet is up or down.”).
To add to the confusion, AlterWAN contends that it can
establish infringement under the district court’s construction of the term “cooperating service provider” once the Internet availability language is included because the plain
and ordinary meaning of the term simply means a service
provider that cooperates.
We have previously warned of the dangers of stipulating to non-infringement based on a district court’s claim
constructions without indicating the exact basis for non-infringement. In Jang, the parties had entered into a stipulation that suffered two ambiguities. First, the stipulation
did not identify which of the district court’s claim constructions actually affected the issue of infringement. 532
F.3d at 1336. Second, the stipulation did not provide any
factual context as to “how the disputed claim construction
rulings relate to the accused products.”
Id. at 1337. We
vacated and remanded, holding that “[a] judgment is reviewable only if it is possible for the appellate court to ascertain the basis for the judgment challenged on appeal.”
Id. at 1334–35.
Here, as in Jang, we cannot “ascertain the basis for the
judgment” of non-infringement, id., because the parties did
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not adequately explain how the claim construction rulings
related to the accused systems. See also Superior Indus. v.
Masaba, Inc.,
553 F. App’x 986, 989 (Fed. Cir. 2014). We
must vacate the judgment and remand to the district court
for further proceedings to clarify the parties’ non-infringement positions, and to determine whether a stipulation of
non-infringement is even possible in the circumstances of
this case.
II
Since further proceedings are required, we think it useful and appropriate to clarify the meaning of the claim term
non-blocking bandwidth in one respect. The district court’s
construction, which effectively requires a system to provide
bandwidth even when the Internet is inoperable, is not a
reasonable construction in light of the specification since it
requires the impossible. Amazon cites Chef America for the
proposition that “[c]ourts may not redraft claims, whether
to make them operable or to sustain their validity.” Appellee’s Br. 20 (quoting Chef Am., Inc. v. Lamb-Weston, Inc.,
358 F.3d 1371, 1374 (Fed. Cir. 2004)). In Chef America, the
patentee claimed a process for making baked goods.
358
F.3d at 1372. The claim limitation at issue was “heating
the resulting batter-coated dough to a temperature in the
range of about 400° F. to 850° F.”
Id. at 1371. The patentee
contended that the temperature range of “400° F. to 850°
F.” referred to the temperature of the oven, rather than the
temperature of the dough.
Id. at 1371–72. This court disagreed, holding that the claims were unambiguous and declining to replace the term “to” with the term “at,” even
though the claim, as written, led to an absurd result—the
baked good being burned.
Chef America does not require us to depart from common sense in claim construction. Here, the claim language
itself does not unambiguously require bandwidth to be
available even when the Internet is inoperable. See Ecolab,
Inc. v. FMC Corp., 569 F.3d 1335, 1345 (Fed. Cir.),
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12 ALTERWAN, INC. v. AMAZON.COM, INC.
amended on reh’g in part,
366 F. App’x 154 (Fed. Cir. 2009).
It is true that the specification defines “non-blocking bandwidth” as “bandwidth that will always be available and will
always be sufficient.” ’478 patent, col. 4 l. 67–col. 5 l. 1.
But this statement must be read in context.
The specification states that “[t]he wide area network
technology described herein (referred to as AlterWAN™
network) is an alternative wide area network that uses the
internet as a backbone.” ’478 patent, col. 3, ll. 61–63. The
specification describes several “quality of service” problems
that arise from using the internet as a backbone, including
latency problems, that is, “delay on critical packets getting
from source to destination.” ’478 patent, col. 3 ll. 20–53.
The patent’s solution to the latency problem is to provide
“preplanned high bandwidth, low hop-count routing paths
between pairs of customer sites that are geographically
separated.” ’478 patent, col. 4 ll. 17–19. The specification
describes the preplanned routing paths as a “key characteristic that all species within the genus of the invention
will share” and details its operation. ’478 patent, col. 4 ll.
15–64. The specification then states: “In other words, the
quality of service problem that has plagued prior attempts
is solved by providing non-blocking bandwidth (bandwidth
that will always be available and will always be sufficient)
and predefining routes for the ‘private tunnel’ paths between points on the internet . . . .” ’478 patent, col. 4 l. 65–
col. 5 l. 3.
The specification does not remotely suggest operability
when the Internet is unavailable. Claims that are directed
to transmission over the Internet cannot require such
transmission when the Internet is not working. In light of
the specification, “non-blocking bandwidth” is properly understood to address the problem of latency, rather than
providing for bandwidth even in the scenario where the Internet is inoperable. We do not opine on what the meaning
of non-blocking bandwidth is, other than it does not require
bandwidth when the Internet is down. The district court
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on remand will make an appropriate revision to this claim
construction.
AlterWAN also challenges the district court’s construction of the “routing” claim term, a term that is not included
in the stipulation. Although it can be appropriate to decide,
on appeal, claim constructions not implicated by the district court’s judgment in limited circumstances, see
Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362,
1369 (Fed. Cir. 2012), we decline to do so here.
CONCLUSION
For the foregoing reasons, we vacate the stipulated
judgment of non-infringement and remand the case for further proceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
